IPR2016-01243
`Date: February 9, 2018
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`PRIME FOCUS CREATIVE SERVICES CANADA INC.,
`Petitioner
`
`v.
`
`LEGEND 3D, INC.,
`Patent Owner
`
`
`IPR2016-01243
`U.S. Patent No. 7,907,793
`
`PATENT OWNER’S OPPOSITION
`TO PETITIONER’S REQUEST FOR REHEARING
`
`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`Date: February 9, 2018
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`PRIME FOCUS CREATIVE SERVICES CANADA INC.,
`Petitioner
`
`v.
`
`LEGEND 3D, INC.,
`Patent Owner
`
`
`IPR2016-01243
`U.S. Patent No. 7,907,793
`
`PATENT OWNER’S OPPOSITION
`TO PETITIONER’S REQUEST FOR REHEARING
`
`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`IPR2016-01243
`Date: February 9, 2018
`
`
`TABLE OF CONTENTS
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`I.
`II.
`
`B.
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`C.
`
`D.
`
`B.
`
`Page
`INTRODUCTION ........................................................................................... 1
`PRIME’S SUGGESTION THAT THE BOARD EXCEEDED ITS
`AUTHORITY IS FATALLY FLAWED ........................................................ 2
`A.
`The Board Has Authority to Decide If the Petitioner Failed to
`Meet Its Burden – That Is the Board’s Primary Role ........................... 2
`The Board’s Finding That Petitioner Failed to Meet Its Burden
`Is Not a “New Theory” .......................................................................... 5
`The Board Is Not Boxed into Its Preliminary Findings at the
`Institution Decision Phase, as Prime Suggests ...................................... 8
`Prime Would Have the Board Moot Prime’s Burden of
`Persuasion Requirement or Shift It to Patent Owner ............................ 9
`Prime Misapplies the Concept of Due Process ................................... 10
`E.
`Prime Was Not Unjustly Prejudiced ................................................... 11
`F.
`III. THE BOARD DID NOT MISAPPREHEND OR OVERLOOK ANY
`ARGUMENTS AND EVIDENCE BECAUSE THOSE
`ARGUMENTS WERE NOT TIMELY ......................................................... 12
`A.
`The Board Fully Addressed the Only Combinability Arguments
`and Evidence Prime Presented During Trial ....................................... 12
`Section III of Prime’s Request is Replete with New Argument
`Never Before Raised ........................................................................... 13
`IV. CONCLUSION .............................................................................................. 15
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`i
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`TABLE OF AUTHORITIES
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`IPR2016-01243
`Date: February 9, 2018
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`
`Page(s)
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`
`Cases
`Dell Inc. v. Acceleron, LLC
`818 F.3d 1293 (Fed. Cir. 2016) ............................................................................ 5
`EmeraChem Holdings LLC v. Volkswagen Grp. of Am., Inc.
`859 F.3d 1341 (2017), 1351-52 (Fed. Cir. 2017) ................................................. 6
`Global Tel*link Corp. v. Securus Techs., Inc.
`2017 WL 2983402 ................................................................................................ 2
`In re Kahn
`441 F.3d 977 (Fed. Cir. 2006) .............................................................................. 4
`KSR Int’l Co. v. Teleflex Inc.
`550 U.S. 398 (2007) .............................................................................................. 4
`In re Magnum Oil Tools Int’l, Ltd.
`829 F.3d 1364 (Fed. Cir. 2016) ................................................2, 3, 4, 8, 9, 10, 11
`In re Nuvasive, Inc.
`841 F.3d 966 (Fed. Cir. 2016) ........................................................................ 5, 15
`Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG
`856 F.3d 1019 (Fed. Cir. 2017) ............................................................................ 6
`SAS Inst., Inc. v. ComplementSoft, LLC
`825 F.3d 1341 (Fed. Cir. 2016) ............................................................................ 7
`Statutes
`Title 5 of the United States Code section 554(b)(3) .................................................. 6
`Title 5 of the United States Code section 554(c) ....................................................... 6
`Title 5 of the United States Code section 556(d) ....................................................... 6
`Title 35 of the United States Code section 103 ....................................................... 10
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`
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`ii
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`IPR2016-01243
`Date: February 9, 2018
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`Title 35 of the United States Code section 316(e) ................................................. 2, 9
`Other Authorities
`Title 37 Code of Federal Regulations section 42.104 .............................................. 10
`Title 37 Code of Federal Regulations section 42.107 ................................................ 2
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`iii
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`IPR2016-01243
`Date: February 9, 2018
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`Pursuant to the Board’s authorization and in response to Petitioner’s Request
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`for Rehearing (the “Request,” Paper 55), Patent Owner submits this Opposition to
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`Petitioner’s Request and respectfully submits that Petitioner’s Request should be
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`denied.
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`I.
`
`INTRODUCTION
`Prime’s Request is about one thing: Prime’s failure to meet its burden
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`to show the alleged combinability of Sullivan with the ‘670 and ‘081 patents, and
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`its belated and improper attempt to get a second bite at the apple after the trial has
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`concluded. Prime attempts to blame its failure on the Board (e.g., for allegedly
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`raising a “new theory”) and Patent Owner (e.g., for choosing not to rebut the
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`alleged combinability). Yet, the Board raised no new theories – rather, it merely
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`rendered judgment on the record; and Patent Owner was not required to respond to
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`each and every argument in Prime’s Petition no matter how half-baked such
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`arguments were. Nevertheless, Prime would have the Board excuse Prime’s failure
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`to meet its burden, despite the fact that this burden begins and ends with Prime.
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`If Prime had its way, the Board would be boxed into its Institution
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`Decision and unable to rule differently at the end of trial to the extent that a patent
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`owner chooses to not respond to each and every argument in a petition. This
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`ignores, inter alia, the fact that the Institution Decision is based on a “reasonable
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`1
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`
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`likelihood” and the final Judgment is based on a different, “preponderance of the
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`IPR2016-01243
`Date: February 9, 2018
`
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`evidence” standard. 37 CFR 42.107; 35 U.S.C. § 316(e).
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`Now, faced with its failure to meet its burden, Prime is improperly
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`attempting to use its Request to bolster its Petition regarding combinability ex post
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`facto and introduce new arguments for the first time. Accordingly, it would be
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`improper for the Board to give any weight to these new arguments that Prime
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`failed to raise during trial.
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`II.
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`PRIME’S SUGGESTION THAT THE BOARD EXCEEDED ITS
`AUTHORITY IS FATALLY FLAWED
`A. The Board Has Authority to Decide If the Petitioner Failed to
`Meet Its Burden – That Is the Board’s Primary Role
`“In an inter partes review . . . , the petitioner shall have the burden of
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`proving a proposition of unpatentability by a preponderance of the evidence.” 35
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`U.S.C. § 316(e). There is no question that the Board has the authority to determine
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`whether a petitioner has met its burden, even where a patent owner remains silent
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`on an issue. See Global Tel*link Corp. v. Securus Techs., Inc., 2017 WL 2983402,
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`PGR2015-0014, at *2 (PTAB July 12, 2017) (denying Petitioner’s Request for
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`Rehearing, stating “we do not agree with Petitioner that Magnum Oil limits our
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`evaluation of whether Petitioner met its burden to [only those] arguments advanced
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`by Patent Owner”); see also In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364,
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`
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`2
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`
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`1377 n.1 (Fed. Cir. 2016) (“[T]he patent owner is not required to use its
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`IPR2016-01243
`Date: February 9, 2018
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`opportunity under the regulations to file a patent owner response.”).
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`Nevertheless, Prime complains that Patent Owner never challenged
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`the combinability of Sullivan with the ’670 and/or ‘081 Patents, then blames Board
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`and distorts Magnum Oil to support its argument that “[i]t was improper for the
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`Board to adopt this new theory for the first time in its Final Written Decision.”
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`Request at 3. Prime fails to cite any direct authority for its allegation that simply
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`because Patent Owner remained silent on combinability, Prime should somehow
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`get a pass on meeting its burden. Instead, Prime tries to shoehorn its arguments
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`regarding the alleged impropriety of the Board’s decision into a gross misreading
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`of Magnum Oil. Request at 3-4. But Magnum Oil, as cited by Prime, merely states
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`that the Board may not “adopt arguments on behalf of petitioners that . . . were not
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`raised by petitioners.” Magnum Oil, 829 F.3d at 1381 (emphasis added). Magnum
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`Oil is inapposite, however, because the issue here is not that the Board introduced
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`new arguments that a petitioner previously failed to present. Rather, Prime
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`complains because the Board simply weighed the arguments already presented by
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`petitioner, and found them deficient.
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`Indeed, Prime’s citation of Magnum Oil actually supports the Board’s
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`findings: “Instead, the Board must base its decision on arguments that were
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`advanced by a party and to which the opposing party was given a chance to
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`3
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`
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`respond.” Magnum Oil, 829 F.3d at 1381. That is exactly what happened here.
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`IPR2016-01243
`Date: February 9, 2018
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`Prime advanced an argument regarding Sullivan’s alleged combinability with the
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`‘670 and ‘081 patents; Patent Owner was given a chance to respond; and the Board
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`based its decision on its finding that Prime’s argument was deficient. Accordingly,
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`the Board’s actions were proper under Magnum Oil.
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`If Prime’s faulty reading of Magnum Oil were correct, the Board’s
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`institution decisions would necessarily translate to conclusions of unpatentability
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`whenever a patent owner opted not to respond – or worse, lacked sufficient word
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`count to respond – to each and every argument regardless of its merit. But the
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`Federal Circuit rejected this impractical outcome. Magnum Oil, 829 F.3d at 1377
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`n.1 (“[T]he institution of an IPR does not by itself translate to a conclusion of
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`unpatentability and the patent owner is not required to use its opportunity under the
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`regulations to file a patent owner response.” (emphasis added)).
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`The simple fact is that Prime failed to meet its burden to set out
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`articulated reasoning with some rational underpinning to support the alleged
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`combinability of Sullivan. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
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`(2007); In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Prime’s failure cannot be
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`cured or rendered moot by the Patent Owner’s silence with regard to an issue.
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`Magnum Oil, 829 F.3d at 1377. And it would be nonsensical to conclude that the
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`Board is prohibited from finding that Prime’s burden was not met. Moreover, as
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`4
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`explained below in Section I.B, Prime’s suggestion that the Board presented a
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`IPR2016-01243
`Date: February 9, 2018
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`“new theory” is entirely inaccurate.
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`B.
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`The Board’s Finding That Petitioner Failed to Meet Its Burden Is
`Not a “New Theory”
`The Board did not adopt a “new theory” when it observed that
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`Petitioner failed to meet its burden by not adequately fleshing out its own theory of
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`unpatentability. The Board merely ruled on Prime’s existing theory of
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`unpatentability based on the evidence on the record. And even if the basis of the
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`Board’s ruling could somehow be considered a “new theory,” it certainly cannot be
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`considered a “new theory of unpatentability” – the type of prohibited “new theory”
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`addressed by the authority cited by Prime. Request at 3-5.
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`Particularly, Prime’s attempt to support its argument that the Board
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`erred relies on a series of inapposite cases. These cases only restrict the Board
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`from augmenting a petitioner’s arguments to reach a finding of unpatentability
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`without giving the patent owner an opportunity to respond, not from ruling on the
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`adequacy of the petitioner’s arguments based on the evidence properly in the
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`record. See In re Nuvasive, Inc., 841 F.3d 966, 972, 975 (Fed. Cir. 2016) (finding
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`the Board improperly relied on uncited portions of the prior art as a basis for
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`finding unpatentability); Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed.
`
`Cir. 2016) (finding the Board improperly relied on a basis of unpatentability raised
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`5
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`IPR2016-01243
`Date: February 9, 2018
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`for the first time during the oral hearing); Rovalma, S.A. v. Bohler-Edelstahl GmbH
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`& Co. KG, 856 F.3d 1019, 1029 (Fed. Cir. 2017) (The Board must timely inform a
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`patent owner of ‘the matters of fact and law asserted,’ give the patent owner an
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`‘opportunity’ for the ‘submission and consideration of facts’ and ‘arguments,’ and
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`permit the patent owner ‘to submit rebuttal evidence, and to conduct such cross-
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`examination as may be required for a full and true disclosure of the facts.’”
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`(quoting 5 U.S.C. §§ 554(b)(3), (c), 556(d)) (emphasis added); EmeraChem
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`Holdings LLC v. Volkswagen Grp. of Am., Inc. 859 F.3d 1341 (2017), 1351-52
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`(Fed. Cir. 2017) (The Board improperly relied on a different prior art reference
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`when determining unpatentability of certain claims in its final written decision.).
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`These cases stand for the proposition that the Board cannot deprive a
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`patent owner of its property right (i.e., its patent) without giving the patent owner
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`an adequate chance to respond to the challenges threatening its property right –
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`whether those challenges come from the Board or the petitioner. But these cases
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`do not support Prime’s theory that a petitioner’s failure to meet its burden must be
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`ignored by the Board because this failure was not earlier challenged by either the
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`Board or the patent owner. Here, the Board did not change any theories; it simply
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`found that Prime failed to show obviousness by a preponderance of the evidence.
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`Ironically, in order to arrive at a decision of unpatentability on claims
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`3-6 and 15-18 as Prime would have liked, the Board would have been required to
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`6
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`add its own arguments on combinability to Prime’s mere conclusory statements to
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`IPR2016-01243
`Date: February 9, 2018
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`develop a “new theory of unpatentability” that Prime failed to adequately set forth
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`in its Petition. This is exactly the type of conduct Prime’s cited authority prohibits.
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`Neither is SAS Inst., Inc. v. ComplementSoft, LLC helpful to Prime.
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`While this case addressed procedural safeguards for the petitioner, it was decided
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`on the basis of a claim term newly construed in the final written decision. SAS
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`Inst., 825 F.3d 1341, 1350-52 (Fed. Cir. 2016). This is far different from the case
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`at hand. In SAS Inst., the Board made a new construction in its final written
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`decision that “varie[d] significantly from its initial interpretation of the term.” Id.
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`This placed a brand new legal challenge in front of the Petitioner for establishing
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`unpatentability, one that could not possibly have been met at that stage in the
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`proceeding. Here, by contrast, the Board did not change the legal standard that
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`Prime needed to meet to prove unpatentability. The Board simply ruled based on
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`the preponderance of the evidence standard. In preparing its Petition, Prime knew
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`or should have known of the legal standard it would ultimately face, yet Prime
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`failed to meet this standard.
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`As a further attempt to bolster its argument, Prime claims that “the
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`Board relied on previously uncited evidence in support of its new theory.” Request
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`at 6. However, it is telling that Prime did not cite to any of this purported
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`“previously uncited evidence” in support of this “new theory.” Indeed, as the
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`7
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`Board knows, the Board simply weighed the evidence presented by Petitioner and
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`IPR2016-01243
`Date: February 9, 2018
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`made its ruling based on the insufficiency of that evidence.
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`Indeed, each of the Board’s conclusions is properly based on one or
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`more of Prime’s failures to meet its burden, not on any “previously uncited
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`evidence” or “new theories” on the merits. See Paper 54 at 43-44 (“Petitioner’s
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`proffered rationale fails to address . . . .”; “Petitioner offers only a conclusory
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`statement . . . .”; “Petitioner never identifies . . . .”; “Petitioner’s assertion . . . is
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`conclusory and untethered from Sullivan”; “Neither Petitioner nor Dr. Forsyth
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`explain how or why one of ordinary skill in the art would recognize. . . .”;
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`“Petitioner’s invocation of a simple substitution also is insufficiently explained”;
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`“Petitioner makes no attempt to show . . . .”). These are not “new theories” but are
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`simply rulings on the insufficiencies of arguments advanced by Petitioner.
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`C. The Board Is Not Boxed into Its Preliminary Findings at the
`Institution Decision Phase, as Prime Suggests
`Not only is the Board not confined to its Preliminary Findings, but it
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`has “an obligation to assess the question anew after trial based on the totality of the
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`record.” Magnum Oil, 829 F.3d at 1364. The Board viewed the evidence under a
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`lower standard applicable at the Institution phase, and properly reassessed the
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`question anew under the higher standard at the Final Written Decision phase. Id. at
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`1376 (“[T]he decision to institute and the final written decision are two very
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`8
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`different analyses, and each applies a qualitatively different standard” (emphasis
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`IPR2016-01243
`Date: February 9, 2018
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`added) (internal quotation marks omitted).
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`Prime also argues unpersuasively that the Board “changed its theory
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`on the combinability of Sullivan between the Institution Decision and the Final
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`Written Decision.” Request at 5. Here again, Prime ignores the fact that the “that
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`the decision to institute and the final written decision are two very different
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`analyses, and each applies a qualitatively different standard.” Magnum Oil at 1376
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`(emphasis added). Accordingly, the board is permitted to reach a different result in
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`its final written decision.
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`D.
`
`Prime Would Have the Board Moot Prime’s Burden of
`Persuasion Requirement or Shift It to Patent Owner
`As noted above, Prime bears the burden of persuasion in this non-
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`burden-shifting environment of an inter partes review. Per Magnum Oil, “[i]n an
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`inter partes review, the burden of persuasion is on the petitioner to prove
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`‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that
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`burden never shifts to the patentee.” 829 F.3d at 1375 (emphasis added). This is
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`especially true where the only issues to be considered are what the prior art
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`discloses, whether there would have been a motivation to combine the prior art,
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`and whether that combination would render the patented claims obvious. Id at
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`1376. Accordingly, the petitioner must make its arguments, and it either succeeds
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`9
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`in meeting its burden or fails. Here, as the Board ruled, Prime merely provided
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`IPR2016-01243
`Date: February 9, 2018
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`conclusory statements and failed to meet its burden. Paper 54 at 42-45.
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`Prime’s Request would flout Federal Circuit case law by having a
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`petitioner’s burden of persuasion requirement either mooted where a patent owner
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`elects to not respond, or shifted to require the patent owner respond simply because
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`an argument was raised in the petition. Prime’s Request is replete with argument
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`that suggests the consequence of not addressing an argument set forth in a petition
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`is that the Board is prohibited from finding against a petitioner on that issue when
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`rendering its final written decision. Request at 1, 3, 7. This is not the law.
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`Prime’s arguments are tantamount to now requiring that a patent
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`owner rebut each and every argument in the petition. This amounts to nothing
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`more than shifting the burden of persuasion to the patent owner once the petition is
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`filed, regardless of whether the petitioner has met its burden on a particular issue.
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`Not only would this dispense with Prime’s burden, but this would be wholly
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`inconsistent with the Federal Circuit’s mandate that “[petitioner’s] burden never
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`shifts to the patentee.” Magnum Oil, 829 F.3d at 1375 (emphases added).
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`E.
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`Prime Misapplies the Concept of Due Process
`Prime hired excellent counsel who are presumably aware of the
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`requirements of 37 CFR § 42.104 and of 35 U.S.C. § 103, as well as the body of
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`case law surrounding these provisions. Yet, Prime cries foul as if it had only
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`10
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`IPR2016-01243
`Date: February 9, 2018
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`become aware of the requirement to provide more than mere conclusory statements
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`to establish “motivation to combine” for the very first time after the Board’s Final
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`Written Decision. Request at 4-7. Simply because neither the Board nor Patent
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`Owner previously told Prime that it failed to meet its burden on combinability,
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`Prime would have its burden mooted and would have the Board waive its
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`obligation to decide the merits of Prime’s conclusory combinability argument.
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`Moreover, such a ruling would pervert the IPR process and take away
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`a patent owner’s ability to exercise good judgment to selectively address only
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`those issues that it deems worthy of responding to.
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`F.
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`Prime Was Not Unjustly Prejudiced
`With no legal authority, Prime argues it was unjustly prejudiced by
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`the Board’s decision because Prime is now subject to estoppel that would not have
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`applied had the Board denied institution. Prime’s argument ignores the fact that
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`the IPR process allows for the possibility that claims may survive the trial despite
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`institution because “the decision to institute and the final written decision are two
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`very different analyses, and each applies a qualitatively different standard.”
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`Magnum Oil, 829 F.3d at 1376. Prime’s suggestion – essentially that any final
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`written decision that does not invalidate instituted claims unjustly prejudices the
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`Petitioner on account of the estoppel provision – is effectively an attack on the
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`11
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`entire doctrine of estoppel. Prime has provided no legal authority supporting such
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`IPR2016-01243
`Date: February 9, 2018
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`an attack.
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`Moreover, Prime blames the Board for Prime’s own deficiencies in its
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`original Petition. Prime presumably knew of the risks of estoppel before filing its
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`Petition. Prime presumably also knew that the standard for institution is lower
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`than the standard for the final written decision. This qualitative difference in
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`standards leads to a very real possibility that patent claims might be subject to
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`institution yet still survive the trial. If estoppel was important to Prime, it was
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`incumbent on Prime to prepare as strong a Petition as it deemed appropriate in
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`light of the risks posed by the estoppel provisions, while also considering that
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`those arguments must hold up under the higher burden during the IPR trial. Prime
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`cannot now be heard to complain.
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`III. THE BOARD DID NOT MISAPPREHEND OR OVERLOOK ANY
`ARGUMENTS AND EVIDENCE BECAUSE THOSE ARGUMENTS
`WERE NOT TIMELY
`A. The Board Fully Addressed the Only Combinability Arguments
`and Evidence Prime Presented During Trial
`The Board found that Prime “has not set forth a sufficient rationale for
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`combining the cited teachings of the ‘081 and ‘670 Patents with those of Sullivan.”
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`Paper 54 at 45. The Board carefully evaluated each of Prime’s arguments and the
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`12
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`IPR2016-01243
`Date: February 9, 2018
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`corresponding evidence (Paper 54 at 43-45), and found that Prime failed to meet its
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`burden.
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`B.
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`Section III of Prime’s Request is Replete with New Argument
`Never Before Raised
`Section III of Prime’s Request is much more than an explanation of
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`what the Board allegedly overlooked or misapprehended. It is a full attempt to
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`belatedly argue the merits regarding the teachings of the references. Tellingly,
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`Prime only sparsely quotes actual arguments from the record, and instead includes
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`new citations to the record never before relied on for the proposition of
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`combinability as well as new elaboration and explanation of the references never
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`before given. Request at 8-13 (citing Ex. 2021 at 21:21-22, 26:10-12, 31:12-15;
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`IPR2016-01491, Paper 37; Ex. 2003, FIGS. 60, 62). This is clearly new argument
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`never before raised in these proceedings. It should all be disregarded.
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`Pursuant to the Board’s email of January 25, 2018, Patent Owner may
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`not now address Prime’s new arguments on the merits. Accordingly, Patent Owner
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`simply highlights for the Board that Section III of Prime’s Request seeks to fix the
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`deficient and conclusory statements in its original Petition with a series of new
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`arguments that it tries to disguise as material that should have been “given” or
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`“obvious.” Many of Prime’s statements in this section begin with a phrase
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`intended to cause a reader to think the reader is about to read something needs no
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`13
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`explaining, but then Prime follows those phrases with detailed and complicated
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`IPR2016-01243
`Date: February 9, 2018
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`argument never before made or suggested.
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`In one example, Prime includes almost a full page of new argument
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`and explanation under the guise of explaining what the Board “overlooked.”
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`Request at 9-10. To disguise this as previously included materials that might have
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`been overlooked, Prime introduces it new arguments as follows:
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` “Of course, the only way to project just “a portion” of an image is to
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`delineate the specific portion of the image that is actually projected –
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`i.e., create a mask.” Request at 9 (emphasis added).
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` “It is obviously impossible to project only “a portion of an image
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`without having created a data structure to identify the specific group
`
`of pixels that will be projected – i.e., without creating a mask.”
`
`Request at 9 (emphasis added).
`
` “Clearly it is not the entire 2D image that is projected onto the
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`virtual 3D head.” Request at 9 (emphasis added).
`
`In these passages, Prime also describes Figures 60 and 62 of the ‘793
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`patent, which were never discussed in either party’s earlier papers, and even points
`
`to a different IPR proceeding (IPR 2016-01491) in attempt to support its new
`
`arguments. Request at 9.
`
`
`
`14
`
`
`
`Prime also raises arguments based on portions of Dr. Forsyth’s
`
`IPR2016-01243
`Date: February 9, 2018
`
`
`deposition testimony that neither party nor the Board has relied on. Request at 10-
`
`11. Prime’s failure to cite to any position previously set forth in its papers when
`
`relying on these passages is telling. Prime would now have the Board find
`
`unpatentability based on this never-before-relied-upon evidence, but this is exactly
`
`what is prohibited by the very cases Prime cited. See, e.g., Nuvasive, 841 F.3d at
`
`972, 975 (finding the Board improperly relied on uncited portions of the prior art
`
`as a basis for finding unpatentability).
`
`IV. CONCLUSION
`For all the foregoing reasons, Petitioner’s Request should be denied.
`
`
`Dated: February 9, 2018
`San Diego, CA
`
`
`
`
`
`
`/s/Daniel N. Yannuzzi /
`By:
` DANIEL N. YANNUZZI
` Registration No.: 36,727
`
`
`
`15
`
`
`
`IPR2016-01243
`Date: February 9, 2018
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, the undersigned hereby certifies that on
`
`February 9, 2018, a copy of the foregoing PATENT OWNER’S
`
`OPPOSITION TO PETITIONER’S REQUEST FOR REHEARING was
`
`served electronically on the following counsel via the email addresses listed
`
`below:
`
`
`
`Lead Counsel
`
`Backup Counsel
`
`
`
`Joshua Glucoft (Reg. No. 67,696)
`Irell & Manella LLP
`1800 Avenue of the Stars
`Suite 900
`Los Angeles, CA 90067-4276
`Tel: 310.203.7189
`Fax: 310.203.7199
`E-mail: JGlucoft@Irell.com
`PrimeFocusIPR@irell.com
`Michael Fleming (Reg. No. 67,933)
`Irell & Manella LLP
`1800 Avenue of the Stars
`Suite 900
`Los Angeles, CA 90067-4276
`Tel: 310.203.7915
`Fax: 310.556.5258
`E-mail: MFleming@Irell.com
`PrimeFocusIPR@irell.com
`
`/s/Jesse Salen/
`Jesse Salen
`
`i
`
`
`
`
`
`
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`
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